While implementation of the significant reforms to the
Trade-marks Act in Canada that were passed in 2014 has
been very slow, one area that has been implemented is the
amendments to combat counterfeiting. The amendments are an attempt
to change the international reputation of Canada as a laggard in
The amendments brought into force on January 1, 2015 assist both
trade-mark and copyright owners in their efforts to stop the
distribution and importation into Canada of counterfeit goods.
Specifically, the amendments create new civil and criminal
prohibitions and remedies. An owner of a registered trade-mark in
Canada may claim against importers or exporters of goods which,
without the consent of that owner, bear trade-marks on the goods,
labels or packaging that are identical to or cannot be
distinguished from those of that owner. Similarly, a copyright
owner may claim against importers and exporters of infringing
copies of its copyright protected works. It is important to note
that the copyright protected work does not need to be registered in
Canada, as is the case with trade-marks. Having said that, in order
to take advantage of the new remedy, it is still recommended that
copyright protected works be registered.
The remedies under this new civil cause of action include the
destruction of the counterfeit goods, packages, labels and
advertising materials and the equipment used to make the
counterfeit goods. Further, the new remedies provide for the
imposition of punitive damages.
The new criminal sanctions for counterfeiting provide for
$25,000.00 in fines and up to 6 months imprisonment for a summary
conviction, and $1 million in fines and up to 5 years imprisonment
for an indictable conviction. However, these sanctions do not apply
to grey market goods, goods imported for only personal use and
goods being shipped through Canada (imported and exported without
distribution or sale in Canada).
An interesting innovation in the amendments is to provide for a
new mechanism to stop counterfeit goods at Canada's borders.
The Canada Border Service Agency ("CBSA") is operating a
new program where owners of registered Canadian trade-marks can
make a request for assistance ("RFA") of the CBSA
concerning counterfeit goods imported into Canada. Upon filing an
RFA, the CBSA will contact the trade-mark or copyright owner with
respect to suspected counterfeit goods that are being imported into
Canada, provide samples of the goods and detain the suspected
counterfeit goods at the border.
Suspected counterfeit goods will be detained by the CBSA for 10
days (5 days for perishable goods), which can be extended for a
further 10 days. This period of detention is to allow the rights
owner an opportunity to commence court proceedings for
infringement. If the rights owner does not commence a legal
proceeding, the suspected counterfeit goods will be released to the
It is important to note that the rights owner is liable for the
storage, handling and destruction of the detained goods. Further,
the rights owner may have to provide security for these costs as
well as pay damages if the rights owner is unsuccessful in any
legal action it commences.
There is no filing fee for rights owners to register an RFA with
the CBSA and no limit to the number of Canadian registered
trade-marks that can be filed with the CBSA. RFAs filed are valid
for a period of two years and can be renewed.
We understand that, to date, 139 RFAs have been filed with the
CBSA. These RFAs cover 1,972 trade-marks and 4 copyrights. While we
are not aware of a reported case expressly dealing with these
provisions, there have been 26 shipments of suspected counterfeit
goods detained by the CBSA under the new rules.
This new mechanism will ultimately depend on the CBSA's
ability to identify suspected counterfeit goods of trade-mark and
copyright owners who have filed RFAs with the CBSA. Further, it is
likely that in order for this mechanism to be effective, there will
need to be an ongoing working relationship between the rights
owners and CBSA, in order for the rights owner to educate and train
the CBSA on what to look for with respect to counterfeit goods of
the rights owners.
The amendments brought into force are welcome and provide new
and important tools for trade-mark and copyright owners to protect
themselves against counterfeiting. We recommend that trade-mark and
copyright owners take steps to register RFAs with the CBSA to take
advantage of this new protection mechanism. Please contact us to
assist you with the registration of RFAs for your intellectual
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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